Second-use patents
- Introduction and general background of the exceptions and limitations to the principle by which patents should be granted to all inventions in all fields of technology.
When analyzing the validity element of the three tier analysis that inspired the TRIPS PLUS ULTRA proposal we´ve said that the TRIPS Agreement sets a global standard, and that this global standard admits exceptions and limitations. We’ve also say that the harmonized aspects (the uniform core or heart of the global patent) are by far more relevant than those that are not harmonized, taking as a parameter to this conclusion the patent legal institution as a whole (a legal institution is the set of rules that gives life to an abstract concept). Nonetheless, it is worth analyzing this exceptions and limitations with detail.
One of the posible limitations that countries may establish within their borders regards the patentable subject matter (exceptions to the patentability of certain products, e.i., determining certain inventions as non-patentable subject matter). According to the general principle of the TRIPS Agreement, patents should be granted to all inventions in all fields of technology. This principle admits exceptions (or leves each country liberty to regulate the issue).
2. The exception: second use patents
Taken from a “A global solution for the protection of inventions“, pp 150-153. Internal citations omitted.
“Because of the absence of specific provisions in this regard on the TRIPS Agreement, in several legislations exceptions have been determined for the patentability of the […] so-called second-use patents.”
“On one hand, it is argued that the research required for envisioning a [second-use patents] can require equal or even more investments with equal or even greater risks than in the case of [the original] invention. So by following the justification of patents as a tool to encourage investment and thus to ensure technological progress, countries must protect such investments in research for useful discoveries. Meanwhile, there are those who argue that given the nature of [second use] patentes, they should not be considered inventions, being that the result of a [second use patent] does not involve an intellectual activity that deserves this kind of recognition. It is argued that in a [second use patent] there is no inventive process.”
“The doctrinal support for this exclusion is derived from the requirements of novelty and inventive step, which suggests that patents shall not be granted to products or processes that are already in the prior art. A second application or second use of a product or process that is in the prior art—made available to the general public by being described in a prior patent or any other means—would lack novelty and of inventive step.”
(Go back to the patentable subject mater analysis for other ways the principle that state that patents should be granted to all inventions in all fields of technology could be limited.)